DETAILED ACTION
The amendments filed on 08/07/2025 have been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
Claims 1, 7-9, 12-13 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Nichols et al. (US 20040238219).
Regarding claims 1 and 9, Nichols discloses a system to improve drill bit performance of a PDC (polycrystalline diamond compact) drill bit (12) by controlling slip-stick ([0009], figs 1-2), said system comprising a slip apparatus (10) connectable in a drilling string (14) that is positioned in said drilling string to release torsional energy from said drilling string produced due to slip-stick during drilling of a wellbore (figs 1-2, abstract, [0050]), said drilling string extending from the surface to said PDC drill bit (figs 1-2, abstract, [0044]-[0050]), said PDC drill bit being rotated by a drive that produces a rotational drilling force (figs 1-2, abstract, [0050]), said slip apparatus being connectable between a first tubular (20) and a second tubular (22) in said drilling string (figs 1-2, abstract, [0050]), said drilling string comprising drill pipe and a BHA (bottom hole assembly) (18), a transition region (region between 16 and 18, figs 1-2) between said drill pipe and said BHA, a middle region (middle region of 16) of said drilling string (figs 1-2, abstract, [0044]-[0050]), said system comprising: a first component (34) of said slip apparatus being threadably connectable with said first tubular ([0054]); a second component (36) of said slip apparatus being threadably connectable with said second tubular (fig 1); said first component and said second component being mechanically connected to lock said first tubular and said second tubular together to transmit rotational energy produced by said drive through first tubular and said second tubular while drilling with said PDC drill bit (figs 1-2, abstract, [0044]-[0050]), said first component and said second component being mechanically connected to permit relative rotation between said first tubular and said second tubular in response to slip-stick; and said slip apparatus being positioned in or between said transition region and said middle region of said drilling string (figs 1-2, abstract, [0044]-[0050]).
Regarding claims 7 and 12, Nichols further discloses that said slip apparatus is operable without a downhole sensor ([0049]).
Regarding claims 8 and 13, Nichols further discloses an electronic control and a downhole sensor to control operation of said slip apparatus ([0054]).
Claim Rejections - 35 USC § 103
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 4-6 and 10 are rejected under 35 U.S.C. 103 as being unpatentable over Nichols et al. (US 20040238218) as applied to claims 1 and 9 above, and further in view of Zupanick (US 20050211473)
Regarding claims 4-6 and 10, Nichols is silent regarding the fact that said slip apparatus comprises a first gear mounted to rotate with said first tubular; a second gear mounted to rotate with said second tubular; and a rotating connection that permits rotation between said first tubular and said second tubular in response to slip-stick.
Zupanick teaches that said slip apparatus comprises a first gear (402) mounted to rotate with said first tubular (102) (figs 4a-b); a second gear (404) mounted to rotate with said second tubular (104) (figs 4a-b); and a rotating connection that permits rotation between said first tubular and said second tubular in response to slip-stick (connection shown in fig 4a).
(Claim 5) Zupanick further teaches that said slip apparatus comprises a bias member (406) that urges gear engagement between said first gear and said second gear (figs 4a-b).
(Claims 6 and 10) Zupanick further teaches that gear teeth (414, 412) on said first gear and said second gear comprising surfaces that are angled with respect to an axis through said first tubular and said second tubular to permit rotationally sliding engagement of said gear teeth in response to said slip-stick (figs 4a-b), said gear teeth on said first gear and said second gear being arranged to otherwise lock together to allow said rotational drilling force to rotate said PDC drill bit (figs 4a-b).
Before the effective filling date, it would have been obvious to one of ordinary skill in the art, having the teachings of Nichols and Zupanick before him or her, to substitute the pistons by Nichols with the gears taught by Zupanick in order to help reduce any static friction between the drill string and the wellbore ([0007]).
Allowable Subject Matter
Claims 2-3, 11 and 19-20 are objected to as being dependent upon a rejected base claim, but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.
Claims 14-18 are allowed.
The following is a statement of reasons for the indication of allowable subject matter: the closest prior art to record is Nichols et al. (US 20040238218).
Regarding claim 14, Nichols discloses A method for drilling a wellbore with a PDC (polycrystalline diamond compact) drill bit, a slip apparatus that is positioned in said drilling string to release torsional energy from said drilling string produced due to slip-stick during drilling of a wellbore (figs 1-2, abstract, [0044]-[0050]), said drilling string extending from the surface to said PDC drill bit (figs 1-2, abstract, [0044]-[0050]), said drilling string comprising a bottom hole assembly BHA and a length of drill pipe longer than said BHA (figs 1-2, abstract, [0044]-[0050]), a drive to produce rotational drilling force to rotate said PDC drill bit for drilling said wellbore, a transition region between said length of drill pipe and said BHA, a middle region of said drilling string, said method comprising: providing that said slip apparatus is operable to drive said drilling string or to release torsional energy(figs 1-2, abstract, [0044]-[0050]);; said BHA being at a lowermost position in said drill string (figs 1-2, abstract, [0044]-[0050]), said BHA comprising a bit and components comprising one or more of a bit sub, drill collar, heavyweight drill collar, heavy weight drill pipe, stabilizer, reamer, shock, hole opener, downhole motor, rotary steerable system, directional equipment, drilling while measurement equipment, steering unit, near bit inclination, non-magnetic drill collar, said BHA being connected to said drill pipe portion of said drill string (figs 1-2, abstract, [0044]-[0050]); said drill pipe portion comprising additional of said components comprising one or more of a drill pipe, coiled tubing, heavyweight drill pipe, stabilizer (figs 1-2, abstract, [0044]-[0050]);
Nichols is silent regarding utilizing a processor to make torque and drag calculations on said drilling string, said drilling string comprising a BHA (bottom hole assembly) and a drill pipe portion and utilizing said torque and drag calculations on said drill string for determining a position for said slip apparatus in said drilling string to control torsional energy in said drilling string produced by slip-stick as specifically called for in the claimed combination.
Response to Arguments
Applicant's arguments filed on 08/07/2025 have been fully considered but they are not persuasive.
Applicant states that “Nichols drawings are not to scale and cannot support dimensional limitations”. The Examiner respectfully disagrees. In fact, claiming distinct regions does not equate to dimensional limitations. The applicant is not claiming exact dimensions, but general regions on an apparatus. As a result, the relative positioning of various features shown in Nichols drawings is sufficient in describing the features claimed by the applicant.
Applicant states that “Nichols written disclosure lacks the claims 1 and 9 specificity on positioning”. The Examiner respectfully disagrees. Again, the applicant is not claiming transition and middle region having exact coordinates with respect to a reference point. The transition and middle region claimed by the applicant are examined under the Broadest Reasonable Interpretation.
Regarding claims 7 and 12, the applicant states that the time-based or pre-programmed operation of Nichols is fundamentally different form the claimed mechanical system, which responds directly to slip-stick events without. The Applicant appears to be arguing a limitation that is not claimed. Nichols clears states that the assembly can be operated with no sensor is required at all ([0049]).
Regarding claims 4-6 and 10, applicant states that Nichols and Zupnick operate on fundamentally different principles. The Examiner respectfully disagrees. Both Nichols and Zupnick disclose similar system used to selectively decouple a first portion and second portion of a drill string (see Zupanick and Nichols abstracts ).
Applicant states that there is a lack of motivation and predictability. The Examiner respectfully disagrees. In fact, the motivation of the combination is to help reduce any static friction between the drill string and the wellbore, thereby allowing directional drilling with a bent motor to be performed in an efficient manner (Zupanick [0007]). It is important to note that often times downhole apparatus have multiple functions and can be used to reduce both static friction between the drill string and the wellbore as taught by Zupanick ([0007]) and also be used to release torsional energy as disclosed by Nichols (abstract) depending on tool setting and mode of operations.
Conclusion
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to DANY E AKAKPO whose telephone number is (469)295-9255. The examiner can normally be reached M-F 9am - 5pm.
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/DANY E AKAKPO/Examiner, Art Unit 3672
12/04/2025